RECORD KEEPING FOR U.S. PATENT PURPOSES by James V. Costigan, Esq.

<body topmargin=0 leftmargin=0 marginheight=0 marginwidth=0> <table cellpadding=0 cellspacing=0 border=0 height="100%"><tr> <td valign="top" width=160 BGCOLOR="#333333" TEXT="#F7F7FF" background="038dedc2ddualp.gif"> <div> <B>RECORD KEEPING FOR U.S. PATENT PURPOSES by James V. Costigan, Esq.</B></div> <div> <A HREF="default.htm" TARGET="_top" TITLE="HEDMAN COSTIGAN, P.C."><U><B>HEDMAN & COSTIGAN, P.C.</B></U></A><B>: </B><B>Home Page</B></div> </td> <td valign="top" BGCOLOR="#FFFFFF" TEXT="#080000" background="03964643.gif"> <div> <FONT SIZE="5" COLOR="#666633" FACE="Times New Roman" ><B>HEDMAN & COSTIGAN, P.C.</B></FONT>    |     <FONT SIZE="2" COLOR="#0000BF" FACE="Times New Roman" ><A HREF="default.htm" TARGET="_top" TITLE="HEDMAN COSTIGAN, P.C."><U>home</U></A></FONT></div> <div> <FONT SIZE="2" COLOR="#000000" FACE="Times New Roman" >back to</FONT>  <A HREF="id3.htm" TARGET="_top" TITLE="Article Archive"><U><B>Article Archive</B></U></A></div> <div> Editor's note:  THE FOLLOWING TEXT WAS POSTED ON OUR ARTICLES PAGE FOR THE MONTH OF MARCH, 1998:</div> <div>   </div> <div> RECORD KEEPING FOR U.S. PATENT PURPOSES</div> <bR> <div> by James V. Costigan</div> <bR> <bR> <div>      The purpose of this memorandum is to provide practical advice with regard to record keeping for those who intend to file patent applications in the United States.</div> <div>      Under the recently enacted U.S. Patent Law revisions, it will be possible for applicants applying for a U.S. Patent, who made the invention in a GATT country, to rely on the date on which they made their invention rather than the priority of the first filed patent application. This situation may arise in the event that there is (a) a question of whether or not the applicant made the invention prior to a publication which was published less than one year prior to the filing date of the U.S. application, and (b) a question of whether or not the applicant invented the subject matter of a pending application prior to another inventor who has filed an application claiming the same invention. </div> <div>      The proceeding in which the priority of inventorship is determined is known as an interference. In such a proceeding, the applicant with the earliest effective filing date is presumed to be the first to invent and the burden of proving prior inventorship is placed on the applicant with the later filing date. This presumption places the first-to-file applicant at a great advantage because in order to be awarded priority, the second-to-file applicant must prove a corroborated prior conception of the invention with a corroborated reduction to practice. Most interferences are lost by the first- to-invent, second-to-file inventor because of a lack of corroboration of the inventor's activities.</div> <div>      The proof of conception requires a demonstration that, in the mind of the inventor, a definite and permanent idea was formed as to the complete and operative idea as it is to be applied in practice. The following quotation summarizes the approach that the courts have taken in determining if a conception of the invention has been proven. </div> <bR> <div>            "Conception must be proved by corroborating evidence which shows that the inventor disclosed to others his complete thought expressed in such clear terms as to enable those skilled in the art to make the invention. However, there is no final single formula that must be followed in proving corroboration. Rather the sufficiency of corroboration is determined by the rule of reason. Accordingly, a tribunal must make a reasonable analysis of all of the pertinent evidence to determine whether the inventor's evidence is credible. The tribunal must also bear in mind the purpose of corroboration, which is to prevent fraud, by proving independent confirmation of the inventor's testimony. Evidence of corroboration must not depend solely on the inventor himself." Kridl v. McCormick, 41 USPQ2d 1686, 1689 (Fed. Cir. 1997) </div> <div>     The first element of proof in showing a prior conception of the invention is the inventor's own records. These records are very helpful in proving a date of invention if they are contemporaneously kept in the course of a regularly conducted activity and are dated and witnessed by one who is not the inventor. A bound notebook in which the inventor records his ideas and laboratory tests is an ideal way of maintaining such a record. Any ancillary records such as the ordering of supplies, purchasing machinery, purchasing laboratory equipment, requesting tests, photographs, video tapes, computer records, the inventor's periodic reports to a supervisor, etc. have been useful in establishing a date of invention. </div> <div>      The requirement of corroboration is satisfied when one, who is not the inventor, can testify that he has independent knowledge of the facts which prove conception of the invention. A similar requirement exists with regard to the reduction to practice of the invention. In the case of a chemical invention, this testimony can come from a laboratory assistant who has independently carried out a particular reaction or analytical test; in the case of an electronic invention, this testimony could come from a technician who made a "breadboard" model of a circuit at the direction of the inventor; in the case of a mechanical invention this testimony could come from a machinist who made a prototype of a device based on the inventor's drawings. </div> <div>      A policy of creating records must include a record retention policy which will ensure that records will be available many years after the research has been completed. Many interference proceedings involve inventions that were made five to ten years before the time comes for providing the proof of the date of invention. Without contemporaneous records, it is not possible to prove the date on which an invention was actually made.</div> <div>       This brief memorandum is intended to alert those who are concerned with obtaining patent protection in the United States that it is vitally important to maintain and preserve records of research activity. If further information is desired, interested persons are invited to contact the author.</div> <div> <A HREF="id8_m.htm" TITLE="RECORD KEEPING FOR U.S. PATENT PURPOSES "><U>Return to the top of the page.</U></A></div> <div> <A HREF="default.htm" TARGET="_top" TITLE="HEDMAN COSTIGAN, P.C."><U>HEDMAN & COSTIGAN, P.C.</U></A>: Home Page</div> <bR> </td> </tr></table></body>